RE: [gnso-rap-dt] Cybersquatting discussion

[Phil Corwin <pcorwin@xxxxxxxxxxxxxxxxxx>]

I’m weighing in to back Wendy here. I don’t see how you can have a statement 
noting a consensus that “provisions 4(a) and (b) of the UDRP [reproduced below, 
with emphasis] are a sound definition of cybersquatting” and then propose a 
definition which departs in a very fundamental way from that “sound 
definition”. The current statement does not cite 4 and b as a sound definition 
of a “subset” of cybersquatting.

Under subsection registration and bad faith use is one of the three separate 
elements that the complainant must prove to prevail in a UDRP (regardless of 
how some arbitrators play fast and loose with that requirement) - so 
registration absent bad faith use should result in a failed complaint. 
Subsection b provides non-exclusive examples of evidence that “the registration 
and use of a domain name is in bad faith”.

If the WG wants to make a case that the “and” should be dropped in favor of 
“or” they should make it, not disingenuously cite as a “sound definition” a 
provision of the UDRP that requires a conjunctive and does not permit a 
disjunctive determination. They can certainly cite practice at certain ccTLDs 
as providing some precedent for that position. But if a majority wants to 
advocate that very significant change in the definition of cybersquatting they 
should be upfront about it and not pretend that it is consistent with the 
present UDRP - and I would hope they would also propose safeguards if such a 
change we made to limit potential abuses.

That is, if a domain is registered but never used (does not resolve), how is an 
arbitrator or panel supposed to divine that it was intended to be used in bad 
faith other than in the very limited circumstance that it is a trademarked, 
non-dictionary word (e.g., Microsoft, not Apple) and it has been offered for 
sale to an owner of the mark? Given that nearly every dictionary word is 
trademarked for something, allowing a complaint to be brought absent actual bad 
faith use - other than in carefully circumscribed circumstances - is an 
invitation to UDRP abuse by complainants at the expense of registrants.

In any event, the issue of whether “and” should be replaced by “or” is clearly 
a question that can be addressed if we have a comprehensive PDP on UDRP reform 
- so if the WG wants to tee that up as a suggested issue for such a PDP then 
fine, it’s clearly going to be on the table - but please don’t propose UDRP 
reform that only considers changes from complainants’ perspective, which is a 
non-starter anyway.

While I’m at it, I’m also uncomfortable with the way PPC is cited as the 
primary profit motive behind cybersquatting, which seems to run somewhat 
counter to the Interim report’s statement that:

…pay‐per‐click advertising is not in and of itself a registration abuse, and 
that bad‐faith use of trademarks in domain names is a Cybersquatting issue that 
can be addressed under the UDRP. The abuse of a PPC system for illicit gain is 
most appropriately addressed by the operator of the PPC advertising network 
(e.g. Google Adsense).

In any event, PPC monetization of another’s mark is already a use abuse under 
the UDRP, so how is that in the province of a group that is supposed to be 
focused on stand-alone registration abuse?

Final words: In seeking to end some abuses let’s not set up the foundation for 
others.





4. Mandatory Administrative Proceeding.

This Paragraph sets forth the type of disputes for which you are required to 
submit to a mandatory administrative proceeding. These proceedings will be 
conducted before one of the administrative-dispute-resolution service providers 
listed at 
www.icann.org/udrp/approved-providers.htm<http://www.icann.org/dndr/udrp/approved-providers.htm>
 (each, a "Provider").

a. Applicable Disputes. You are required to submit to a mandatory 
administrative proceeding in the event that a third party (a "complainant") 
asserts to the applicable Provider, in compliance with the Rules of Procedure, 
that

(i) your domain name is identical or confusingly similar to a trademark or 
service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; 
and

(iii) your domain name has been registered and is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of these 
three elements are present.

b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 
4(a)(iii)<http://www.icann.org/en/dndr/udrp/policy.htm#4aiii#4aiii>, the 
following circumstances, in particular but without limitation, if found by the 
Panel to be present, shall be evidence of the registration and use of a domain 
name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the 
domain name primarily for the purpose of selling, renting, or otherwise 
transferring the domain name registration to the complainant who is the owner 
of the trademark or service mark or to a competitor of that complainant, for 
valuable consideration in excess of your documented out-of-pocket costs 
directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the 
trademark or service mark from reflecting the mark in a corresponding domain 
name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of 
disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for 
commercial gain, Internet users to your web site or other on-line location, by 
creating a likelihood of confusion with the complainant's mark as to the 
source, sponsorship, affiliation, or endorsement of your web site or location 
or of a product or service on your web site or location.



Philip S. Corwin
Partner
Butera & Andrews
1301 Pennsylvania Ave., NW
Suite 500
Washington, DC 20004

202-347-6875 (office)

202-347-6876 (fax)

202-255-6172 (cell)

"Luck is the residue of design." -- Branch Rickey

________________________________
From: owner-gnso-rap-dt@xxxxxxxxx [mailto:owner-gnso-rap-dt@xxxxxxxxx] On 
Behalf Of Frederick Felman
Sent: Wednesday, May 12, 2010 1:14 PM
To: Marika Konings; RAP-WG
Subject: Re: [gnso-rap-dt] Cybersquatting discussion
Importance: High

Marika, thanks for going through that exchange - the only thing I’d add is the 
text from an earlier email that I sent:

“…Moreover, there's precedence for use of "or" and it makes sense:

1) many ccTLDs in multiple ICANN regions use "or" in their definition of 
Cybersquatting for the purpose of UDRP including .AU and .ES

2) the basis for the GNSO policy changes to reduce kiting was a case that 
demonstrated registration abuse involving Cybersquatting.  One look at the 
exhibits link below shows a plainly an example of Cybersquatting as a pure 
registration abuse in an actual case.”

Best regards - Fred

On 5/10/10 10:56 AM, "Marika Konings" <marika.konings@xxxxxxxxx> wrote:
Dear All,

As discussed on our call today, please find below the main thread from the 
different emails concerning cybersquatting. Please let me know if there is 
anything missing. You are encouraged to continue the discussion on the mailing 
list ahead of next week’s meeting.

With best regards,

Marika

=================================

>From Greg:
5.1.1: Our report says: "Cybersquatting is the deliberate and bad-faith 
registration or use of a name that is a registered brand or mark of an 
unrelated entity, for the purpose of profiting (typically, though not 
exclusively, through pay-per-click advertisements).... There was consensus in 
the RAPWG that provisions 4(a) and 4(b) of the UDRP are a sound definition of 
Cybersquatting."

In the Nairobi comment session, Bruce Tonkin noted that the above is internally 
inconsistent.  Profit is not always a motive for all cybersquatters.  Sections 
4(a) and 4(b) of the UDRP mentions other proofs of bad faith (such as 
“disrupting the business of a competitor.”)  And its mentions profiting by 
getting people to come to the site.

So, I propose we just delete the phrase "for the purpose of profiting 
(typically, though not exclusively, through pay-per-click advertisements)".  I 
think that would make the statement accurate, and respects the conversations we 
had in the WG.  Are there any objections?

>From Rod:
How about this sentence reshuffling alternative that keeps the primary 
methodology mentioned (which people are familiar with) and should take care of 
Bruce's concern:

Cybersquatting is the deliberate and bad-faith registration or use of a name 
that is a registered brand or mark of an unrelated entity, typically, though 
not exclusively, for the purpose of profiting through pay-per-click 
advertisements...

>From James:
....through pay-per-click advertisements or other means of traffic diversion....

>From Mike R:
I like James' better than Rod's version; but I like Greg's even better since it 
is most broad.  Cybersquatting is bad faith registration; bad faith is defined 
through analysis of many factors, including 'for profit' and 'not for profit' 
actions of the defendant.

>From Wendy:
One critical edit: "cybersquatting is the deliberate and bad-faith registration 
*AND* use of a name...," as the UDRP defines it.

>From Greg:
Wendy's edit is accurate. Regarding Rod: if we are referencing the definition 
in the UDRP (and the group had consensus agreement that it was the good 
definition of cybersquatting), why don't we just reference instead of making 
characterizations about motive? Just seems cleaner not to.

>From Fred:
The edit is inaccurate.  It does not reflect the decision by the group, the 
report as submitted the text of our definition of Cybersquatting is cited in 
the report on page 25 in Section 5.1.1 as follows:

"Cybersquatting is the deliberate and bad-faith registration or use of a name 
that is a registered brand or mark of an unrelated entity, for the purpose of 
profiting (typically, though not exclusively, through pay-per-click 
advertisements). Cybersquatting is recognized as an abuse in the ICANN 
community, and the UDRP was created to address this abuse. There was consensus 
in the RAPWG that provisions 4(a) and 4(b) of the UDRP are a sound definition 
of cybersquatting.11"

I disagree with the edit as proposed

>From Jeff N.
I actually agree with Fred here and .us is one of the ccTLDs that takes the 
"or" approach.  Wendy's comment reflects what is currently in the UDRP, but 
that does not mean that that is the absolute in definitions.  It just means 
that the UDRP only addresses what some view as a subset of cybersquatting.